October 14, 2004

Can Aimster and Grokster Co-Exist?

The petition to the Supreme Court in the Grokster case was recently filed. Based on an impromptu class poll, the majority of the students responded that they thought the Supreme Court would grant cert. and reverse the Ninth Circuit’s opinion. Professor Solum mentioned that since all of the major media industry players are involved in this lawsuit, if this case fails, Grokster and Kazaa will get off like O.J. (I added the O.J. part). I don’t see that happening, so I think cert will be granted. As for the outcome, based on the fact that the “Supremes” seem to take a liking to beating up on the Ninth Circuit whenever they can, I also would agree that the case will be reversed. How it will be decided, I have no clue. To try to formulate an idea, I read the cert. brief and the Grokster and Aimster cases again. This only resulted in confusion. I whole-heartedly hope that some of you will help to restore some clear insight.

The evidence that we have summarized does not exclude the possibility of substantial noninfringing uses of the Aimster system, but the evidence is sufficient, especially in a preliminary-injunction proceeding, which is summary in character, to shift the burden of production to Aimster to demonstrate that its service has substantial noninfringing uses.

… All five of our examples of actually or arguably noninfringing uses of Aimster's service are possibilities, but as should be evident from our earlier discussion the question is how probable they are. It is not enough, as we have said, that a product or service be physically capable, as it were, of a noninfringing use. Aimster has failed to produce any evidence that its service has ever been used for a noninfringing use, let alone evidence concerning the frequency of such uses.

The Aimster decision involved a preliminary injunction proceeding. It seems like Posner is saying that the burden was shifted to make Aimster show actual evidence of non-infringing uses of its software. Capability of non-infringing uses, as the Ninth Circuit says is enough, doesn’t fly with the Seventh Circuit. Posner says that it is not a question of whether non-infringing uses are possible, but more of a question whether or not they are probable. So, the Ninth Circuit asks whether the technology can have non-infringing uses, while the Seventh Circuit asks whether it is likely that a technology will have non-infringing uses. For products that are not-yet-introduced or just barely introduced, it is practically impossible to tell how the public will likely use the technology. In Sony, nobody could tell for sure how the Betamax was going to be used. In fact, it can be argued that it ended up being used for a completely different purpose (renting and watching videos) than that which it might have initially been used (time-shifting). So, for new products, Posner’s reasoning shouldn’t apply. If it did, then it seems like technology that is capable of non-infringing uses, and that is likely not to be used solely for infringing purposes, would be blocked by an injunction. And, as always, this is not good for the consumer.

If we apply Posner’s thinking to Grokster anyway, Grokster would be held contributorily liable unless it could show evidence of actual non-infringing uses. Since Grokster has been around for a while, there might be evidence of non-infringing uses out there. Maybe it is not so unreasonable to require Grokster to produce some of this evidence. However, Grokster has a problem because it has no control over its system and can’t point to specific files that are shared that are non-infringing. I guess Grokster users could be surveyed and this evidence could be introduced, but how reliable would this survey really be? Who is going to admit they use Grokster to illegally swap materials? If you do, no doubt the Copyright Police will destroy your computer and fine you for all you are worth (and burn your house down too). So, by the design of their software, which prevents them from showing actual non-infringing use, Grokster would be on the hook.

Like I said, maybe I am missing something. But, it seems the Aimster and Grokster courts are trying to protect two different things. The Ninth Circuit looks more to protect new technology and not-yet-introduced technology by stating that as long as the technology is capable of non-infringing uses, you will not be contributorily liable right off the bat. The Seventh Circuit seems to be saying that once your product is out there (for how long, who knows), and if it is being mainly used for infringing purposes, even though it is capable of non-infringing uses, you had better have some evidence of actual non-infringing uses or you will be faced with an injunction. It seems like there really isn’t a “one size fits all” solution to this problem. Maybe there does need to be two different standards and evidentiary burdens involved. If so, maybe the “Supremes” shouldn’t grant cert because there really is no conflict between the two Circuits.

Comments

Actually, Grokster can tell what is on their network at any given time. Grokster can adopt the role of an ordinary user, connect to their network, and do searches to see what is on the network. You and I can do the same.

We can also see what's on (say) cnn.com now, even though we don't control it.

A bit ironically, Aimster's service used encrypted communications, which it tried to use in its defense. Along this line, Aimster claimed that it simply had no idea, nor could have had any idea, how its system was actually being used. Of course, Aimster probably did have at least some evidence of legit uses and even could have brought that evidence forward. However, tactically, this would have gone against their claim of "see no evil, hear no evil, do no evil". This strategy was a calculated risk, ultimately one which Judge Posner did not take too kindly. He likened it to "wilful ignorance", a deliberate ploy on Aimster's part to try and evade legal scrutiny, and the tone of the opinion is appropriately harsh. The courts do not like being duped. The following is taken from the Aimster decision:

We also reject Aimster’s argument that because the Court said in Sony that mere “constructive knowledge” of infringing uses is not enough for contributory infringement, 464 U.S. at 439, and the encryption feature of Aimster’s service prevented Deep from knowing what songs were being copied by the users of his system, he lacked the knowledge of infringing uses that liability for contributory infringement requires. Willful blindness is knowledge, in copyright law (where indeed it may be enough that the defendant should have known of the direct infringement, Casella v. Morris, 820 F.2d 362, 365 (11th Cir. 1987); 2 Goldstein, supra, § 6.1, p. 6:6), as it is in the law generally. See, e.g., Louis Vuitton S.A. v. Lee, 875 F.2d 584, 590 (7th Cir. 1989) (contributory trademark infringement). One who, knowing or strongly suspecting that he is involved in shady dealings, takes steps to make sure that he does not acquire full or exact knowledge of the nature and extent of those dealings is held to have a criminal intent, United States v. Giovannetti, 919 F.2d 1223, 1228 (7th Cir. 1990), because a deliberate effort to avoid guilty knowledge is all that the law requires to establish a guilty state of mind. (Aimster decision p.11)(emphasis added)

Responding to Ed Felton, doesn't there need to be a distinction between Grokster the software provider and Grokster the user? If the creators of Napster could have just acted as "users" and gone onto their network at any time to see if there were infringing files, why did the Napster court go through all of the hassle of defining the "knowledge" element for contributory infringement? Also, the quoted passage by Posner in Bryan's comment states that the Supreme Court in Sony said constructive knowledge of infringing uses is not enough for contributory infringement. Can knowledge of infringing uses as a user be considered constructive knowledge as a provider, so that Sony applies? The Grokster petitioners seem to summarize the knowledge conflict as follows:

"Compounding the conflict, the Ninth Circuit imposes temporal and knowledge restrictions that are wholly absent from the Seventh Circuit’s analysis. In the Ninth Circuit, a defendant must have knowledge of specific acts of infringement, and the knowledge must come at a time when the defendant is in a position to stop that particular infringement. The Seventh Circuit imposes no comparable requirements. A defendant with knowledge that the primary use of its service is for infringement is liable if it would not have been disproportionately costly to eliminate or reduce substantially the infringing uses, regardless of whether the defendant knew of specific infringement or had disabled mechanisms that would have prevented that infringement." (petition pgs 28-29)

It seems like, at least in one sense, the knowledge standard would be easier to get under the Ninth Circuit, compared to the Seventh Circuit. If Grokster had specific knowledge of an infringing use, and did not eliminate that infringing use, they would be found to have knowledge right away. Under Posner’s analysis, a defendant needs to have knowledge that the “primary use” of the service is for infringement, before knowledge will be found. How do you know what the primary use is going to be without having the service out in use for a substantial period of time? Since there inherently needs to be some significant amount of time to pass before we can determine a “primary use”, maybe the petitioners have it backwards.

Responding to Bryan Lee, if you take Posner's position that willful blindness is knowledge under copyright law, do you think there should be liability for software makers that intentionally avoid elements in their programs that can track the content on their network? Wouldn't this effort to avoid guilty knowledge be enough for the law to "establish a guilty state of mind" for contributory infringement purposes?

First off, I think Professor Felten was merely pointing out that there is no technological barrier preventing Grokster from identifying particular files on its network. Nothing inherent in the design of the system prevents them. In fact, as he correctly points out, doing so would be quite trivial.

Perhaps from a legal standpoint, as you suggest, how the network is designed might make a difference in terms of the "knowledge" element of contributory infringement. But does it make a difference that an index of files on a network is in the possession of the company (a Napster world) or that the index is distributed and must be searched by the company in order to find what's on it (a Grokster world)? I wonder.

I don't think Posner would think so. Posner, being the generalist he is, has taken some established principles of criminal law and applied them to the Aimster case. In the world of criminal law, if someone else commits a crime, and you simply provide the means, you still might be liable under a secondary liability theory: aiding and abetting.

This reminds me of a case from first year of an answering service used by call girls. The question was whether to hold the operator of the service liable for the illegal solicitations that the service without question facilitated. The court looked into the percentage of business came from call girls and steps taken to discourage those calls, among other factors. However, the court never suggested that the operator was scott-free simply, because he never read or listened to any of the messages.

The idea is that if you run a business or build a product, then the law can and will hold you responsible for illegal uses of that business and product, as long as you are in the best position to prevent those illegal uses. Doesn't seem fair does it? But there's fair and then there is the policy behind fair.

Actually, another border-line example secondary liability is car radar detectors. How is it that in some states it legal to sell radar detectors, but illegal to use them? How can companies manufacture devices whose primary purpose is to assist individuals in criminal activity (breaking the speed limit)?

Found the cite for the call girl case. People v. Lauria, 59 Cal. Rptr. 628. Actually, Posner cites this case on page 13 on the Aimster opinion. And wouldn't you know it, the answering service was not found liable.

Dude, Grokster does include evidence of actual substantial noninfringing use (MGM v. Grokster at 11737):

[3] In this case, the district court found it undisputed that the software distributed by each defendant was capable of substantial noninfringing uses. Grokster I, 259 F. Supp. 2d at 1035. A careful examination of the record indicates that there is no genuine issue of material fact as to noninfringing use. Indeed, the Software Distributors submitted numerous declarations by persons who permit their work to be distributed via the software, or who use the software to distribute public domain works. See id. One striking example provided by the Software Distributors is the popular band Wilco, whose record company had declined to release one of its albums on the basis that it had no commercial potential. Wilco repurchased the work from the record company and made the album available for free downloading, both from its own website and through the software user networks. The result sparked widespread interest and, as a result, Wilco received another recording contract. Other recording artists have debuted their works through the user networks. Indeed, the record indicates that thousands of other musical groups have authorized free distribution of their music through the internet. In addition to music, the software has been used to share thousands of public domain literary works made available through Project Gutenberg as well as historic public domain films released by the Prelinger Archive. In short, from the evidence presented, the district court quite correctly concluded that the software was capable of substantial noninfringing uses and, therefore, that the Sony-Betamax doctrine applied.

[4] The Copyright Owners submitted no evidence that could contradict these declarations. Rather, the Copyright Owners argue that the evidence establishes that the vast majority of the software use is for copyright infringement. This argument misapprehends the Sony standard as construed in Napster I, which emphasized that in order for limitations imposed by Sony to apply, a product need only be capable of substantial noninfringing uses.